U.S. Brand Holders Anticipating Business in Cuba Can and really should Safeguard Trademarks
Once we noted within our Client Alert on December 18, 2014, President Barack Obama has announced that he’ll do something to help ease rules which have largely avoided U.S. companies from performing business in Cuba in excess of half a century. While an action of Congress is needed to totally lift the U.S. embargo on trade and commercial activity with Cuba, a lot of companies anticipate having the ability to go into the Cuban market soon. Cuba’s appeal like a potential travel destination causes it to be especially appealing to companies within the hospitality industry. U.S. brand proprietors thinking about expansion into Cuba can and really should take important steps to safeguard their trademark legal rights before entering the brand new market.
Under the best towards the embargo enacted in 1995, U.S. companies may make an application for trademark registrations, conduct trademark opposition and violation proceedings, and pay charges as essential to safeguard their legal rights in trademarks along with other ip in Cuba. Before President Obama’s announcement, couple of U.S. companies were built with a significant curiosity about Cuban trademark protection. As the possibilities of using the services of or within Cuba gets to be more realistic, however, U.S. brand holders should give serious thought to registering their brands in Cuba to prevent potential squatters enabled by Cuban trademark law.
Like many Latin American countries including South america and Mexico, Cuba is really a “first-to-file” jurisdiction, and therefore trademark legal rights are granted according to registration instead of use. To acquire a Cuban registration, unlike the U.S., a job candidate do not need to used and have a genuine intent to make use of the trademark in commerce. Accordingly, a squatter without any intent or capability to really make use of a mark can “reserve” the objective and stop a U.S. brand holder by using and registering its trademark in Cuba. While trademark registrations in Cuba are susceptible to cancellation when the mark is not employed for three consecutive years, cancellation proceedings can require significant time and money to solve. Cuban law also permit trademark registrations to become invalidated according to bad belief in registering the worldwide famous mark of some other, but due to the limited interaction between U.S. brand holders and also the Oficina Cubana en Propiedad Industrial (OCPI, the Cuban same as the U.S. Patent and Trademark Office), the quantity and kind of evidence essential to show bad belief and fame is unclear, and frequently foreign trademark offices are perceived to favor locals. The responsibility is substantial for similar invalidation actions in other Latin American “first-to-file” jurisdictions for example Mexico.
The “first-to-file” rule, however, also activly works to U.S. brand holders’ advantage in that they’re going to apply for protection of the marks in Cuba before really entering the Cuban market. Companies trying to register a trademark in Cuba may either (1) file an worldwide application pursuant towards the Madrid Protocol agreement to increase protection of the existing U.S. registration to Cuba (or designate Cuba for defense under a current Madrid registration) or (2) file a nationwide Cuban trademark application through OCPI.
As limitations on visit and commerce with Cuba are eased, we highly recommend that U.S. brand holders who visit a publish-embargo Cuba like a significant marketplace for their products or services take important positive steps to safeguard their ip, for example registering their trademarks in Cuba.